“U N I T Y…”

Today we learned about the unity of invention standard for international applications. However, we won’t be seeing any PCT (Patent Cooperation Treaty) applications (or so we’ve been told) until after we get out of the academy, so I’m afraid this information is going to rot away by the time it is actually useful.

Let’s step back for a moment. What is an international application? Well, there are no international patents, but there are international applications. The idea is that an individual or company can create an application that meets the formalities for all countries that participate in the Patent Cooperation Treaty; they don’t have to worry about the US having a different standard margin, for example, than Japan. Applicant picks a search authority who does a search and issues an opinion about the potential patentability of the application based on the PCT standards.

Applicant has 30 months total to move from the international stage to the national stage; that is, applicant picks which countries to pursue actual patents in. So we generally look at PCTs in two situations: when we do the PCT “examination” (it isn’t a true examination) and when we look at the national stage application that has been filed in the US from the PCT.

By way of example: I create an in international application for widget X. I choose the US as the search authority, and an examiner does his thing with the application. He searches, he writes his opinion concerning the patentability of the invention, etc. I take a look at the report, and I now decide where I want to spend the money to get patent protection. So I might choose France, the US and Japan. Now I have moved to the national stage with these three applications. The examiners in each of the respective countries consult the preliminary findings of the first examiner, and they go through the prosecution of the applications.

But things get even more complicated, because what we do to restrict inventions in the US is different from the unity standard applied to international applications. To give a quick (and very simplified) refresher of restrictions: an examiner can restrict, or say that an applicant is trying to claim more than one invention, if there are multiple inventions in an application and trying to deal with all of them would represent an undue burden. So if your invention is a bunch of known things put together, that’s unlikely to happen. But if your invention is actually a combination of a bunch of unrelated sub inventions – like my new engine with new lubricant example, then the examiner is well-served to restrict those so that the inventor or assignee will end up with two or more patents, rather than one.

The unity of invention standard is considerably different, and I’m not going to go to great lengths to get it “right.” The idea is that if all the claims share a specific technical feature (something not known in the prior art), and the claims as a whole are directed to a unified invention, the claims have unity. So for the unity standard, my engine and lubricant claims might actually be combinable in a single application.

One can imagine that this makes things difficult for examiners both in terms of doing the job for these cases and in terms of understanding the new standards to apply.

5 thoughts on ““U N I T Y…””

Actually, you may not be working on any PCT applications, but you will probably see “371” applications. (I.e. US National stage of PCT applications.) I actually had quite a few of these while I was in the academy, as they include search reports, so the SPEs that were docketing cases to Academy people as they thought it might help if we saw how the PCT searchers searched the cases. With a national stage application you still have to apply the unity of invention standard when you restrict.

The good thing is that usually the international searcher will note the lack of unity in the search report (as the searching authority can get more money for the search if there isn’t unity of invention).

The unity standard applies to 371 apps in the national stage, which is somewhat important because we examine those often. There’s more to it. You can use the unity standard a priori, meaning find prior art with the common special technical feature and restrict because that feature is known and common to all the groups.

I had that lecture a few months ago, and I didn’t really follow either. I went back and looked at the slides/examples recently, and they were very good.

My classmates and I found the PCT lectures to be a tremendous waste of time. About the only thing any of us remembered outside of a week was “THERE IS NO INTERNATIONAL PATENT”, because they’re careful to stress that point in every single lecture that’s even remotely related to PCTs.

What’s actually going to happen with PCTs and all of the other “We’re going to teach you this now, but you’re not going to need it for a long time” issues is that everyone will forget everything they were ‘taught’, and will just *get help* when the situation arises. In fact, the more practical lecturers will actually tell you that (e.g., “You’re not going to remember this, so just get help from your supervisor”).

The lectures I’d really pay attention to (aside from the obvious 102, 103, 101, 112, etc.) are the claim interpretation and case reporting lectures, and anything taught by Will Grant.

AcadGrad: You’re right; I do know people who have 371 applications, and it is definitely helpful to have the search reports available.

noob: You’re right, I should’ve pointed out the difference between a priori and a posteriori unity.

Also, I should’ve pointed out the difference between 111(a) national stage applications, in which normal restriction practice is used, and 371 applications, where we have to adhere to the PCT unity standard.